Understanding the Basics

For businesses, patents represent not only intellectual property rights but also a significant portion of enterprise value. Patent disputes are often high-stakes battles, and when the validity of a patent is questioned, the outcome can dramatically shift competitive advantages.

Post-grant review proceedings provide a cost-effective and quicker alternative to traditional district court litigation. They offer a forum where companies can resolve disputes without the expense and time required for full trials.

The Basics of Post-Grant Review Proceedings

Post-grant proceedings allow for challenges to patent validity through three main avenues:

• Inter Partes Review (IPR)
• Post-Grant Review (PGR)
• Derivation

These proceedings are handled by the Patent Trial and Appeal Board (PTAB), typically overseen by a panel of three administrative patent judges. Unlike district court trials, PTAB proceedings are streamlined. There is limited discovery, no jury, and very few opportunities for live testimony.

“Think of PTAB proceedings as streamlined trials; they’re not about theatrics, but about the record and the law, ” notes Jeremy Albright of Norton Rose Fulbright US LLP.

The PTAB was established by the America Invents Act (AIA) to create a specialized venue for handling complex patent challenges. Its purpose is to strike a balance by preserving legitimate patents while offering a streamlined way to eliminate those that should not have been granted. Because PTAB judges are typically former patent examiners or practitioners, they bring deep technical expertise that traditional district court judges may lack. This expertise can make PTAB a highly effective forum for resolving disputes in a consistent and technically informed way.

Considerations for Petitioners

Petitioners often favor PTAB proceedings because of several key advantages:

• reduced cost compared to district court,
• faster resolutions,
• a generally favorable success rate, and
• the ability to pause co-pending litigation while the PTAB review is underway.

Another reason petitioners choose PTAB is that the standard of proof is lower compared to district court. Instead of the ‘clear and convincing evidence’ required in litigation, PTAB cases only require a ‘preponderance of the evidence,’ meaning that success can hinge on tipping the scales just slightly. This creates opportunities for challengers but also underscores the need for carefully prepared petitions.

Still, risks do exist. Estoppel rules can bar petitioners from raising the same arguments in later venues, and amended procedures create risks of discretionary denials. These risks create strategic pressure to carefully weigh which arguments to include at the outset.

“The decision to file isn’t just about having a strong invalidity argument; it’s also about timing and knowing your audience,” advises Andrea Shoffstall of Unified Patents.

Considerations for Patent Owners

For patent owners, defending a patent before PTAB requires different strategies than in court. Patent owners can propose amendments to claims, leverage multi-party dynamics such as joint defense groups, and coordinate with suppliers or manufacturers to strengthen their position.

As Brooke Parker of Haynes and Boone notes: “Patent owners still have tools; amendments and smart coordination with co-defendants can make a big difference.”

These strategies can mitigate some disadvantages of PTAB review. Owners must also consider estoppel in reverse, i.e., if they defend their claims unsuccessfully at PTAB, it can limit their arguments in future proceedings.

Overall, effective defense strategies often require blending technical expertise with procedural know-how, especially when deciding whether to amend claims or pursue parallel settlement negotiations. In industries where patents are core to business models, such as biotech and software, these decisions can shape the long-term trajectory of a company.

Timeline of a Post-Grant Trial

A typical post-grant trial follows a structured timeline, which must be completed within 12 months after the proceeding is instituted by statute. It begins with a petition and preliminary response, followed by an institution decision. If instituted, the case proceeds through a trial phase, limited discovery, motions practice, an oral hearing, and finally a written decision. Recent changes have added a discretionary denial process during months 2 to 4, underscoring the importance of timing.

Each stage of the process comes with strict deadlines. For example, once a petition is filed, the patent owner has only three months to respond. After institution, discovery periods are tightly controlled, and hearings are limited to arguments on the written record. Businesses evaluating whether to challenge a patent must be prepared to invest resources quickly and efficiently within this compressed timeline.

Discovery and Motion Practice

Discovery in PTAB proceedings is limited compared to court litigation. Parties exchange mandatory initial disclosures, routine discovery, and, in some cases, request additional discovery. Motion practice plays an outsized role, covering issues such as: motions to amend, motions to exclude, motions to seal, and requests for joinder. These procedural battles can shape the ultimate outcome.

“What happens at PTAB is often won or lost in the motions; if you don’t understand the rules, you’re already behind,” cautions David Tobin of McDermott Will & Schulte LLP.

Unlike litigation, depositions and expansive document discovery are rare. Instead, the focus is on targeted exchanges of information directly relevant to the validity of the patent. Motion practice often becomes the battlefield where key strategic decisions play out. For instance, a well-timed motion to amend can save a patent owner’s claims, while a successful motion to exclude can gut an opponent’s expert evidence.

Impact on Litigation and Business Strategy

PTAB proceedings directly impact ongoing district court cases. Courts often stay cases pending PTAB review, meaning the PTAB’s decision can significantly influence litigation strategy. Estoppel effects may prevent petitioners from raising issues in district court that were or could have been addressed at PTAB.

PTAB proceedings have implications for enterprise value, mergers and acquisitions, and overall IP strategy. In addition, outcomes at PTAB can influence settlement dynamics. A strong PTAB decision may push parties toward resolution before district court trial, saving millions in potential costs. On the other hand, an unfavorable PTAB ruling may encourage further appeals or shift negotiations dramatically. For corporate counsel, integrating PTAB strategy with overall litigation plans is an essential part of risk management.

The Future of Patent Disputes

For executives and investors, post-grant reviews are a critical tool for risk management. When considering acquisitions or evaluating a company’s IP portfolio, the likelihood of patents being challenged through PTAB should be factored into valuation models. Likewise, businesses should proactively monitor competitor filings to anticipate potential risks. Investors in particular should monitor how active a company’s patents are in PTAB proceedings. High rates of challenge may signal vulnerabilities in a portfolio, while a strong record of survival can enhance credibility and valuation. For business leaders, building PTAB awareness into compliance, R&D, and competitive monitoring systems can provide an early warning system that protects both market position and shareholder value.